Trials@uspto.gov
`571-272-7822
`
`Paper No. 10
`
` Entered: October 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORP.,
`Petitioner,
`
`v.
`
`FUJIFILM CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-00625
`Patent 6,641,891 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 10
`
` Entered: October 19, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SONY CORP.,
`Petitioner,
`
`v.
`
`FUJIFILM CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-00625
`Patent 6,641,891 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-00625
`Patent 6,641,891 B2
`
`
`I. INTRODUCTION
`Sony Corporation (“Petitioner”) filed a Request for Rehearing of our
`Decision (Paper 8, “Dec.”) denying institution of an inter partes review of
`claims 1, 4–9, 11, and 14 of U.S. Patent No. 6,641,891 B2 (Ex. 1001, “the
`’891 patent”). Paper 9 (“Req. Reh’g”). In our Decision, we determined that
`Petitioner did not establish a reasonable likelihood of prevailing with respect
`to any of the challenged claims of the ’891 patent. See 35 U.S.C. § 314(a).
`For the reasons that follow, Petitioner’s Request for Rehearing is
`denied.
`
`II. STANDARD OF REVIEW
`The party challenging a decision in a request for rehearing bears the
`burden of showing the decision should be modified. 37 C.F.R. § 42.71(d).
`A request for rehearing “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed.” Id. Upon a request for rehearing, the
`decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R.
`§ 42.71(c).
`
`III. DISCUSSION
`Petitioner contends that it demonstrated in the Petition that Yamazaki1
`expressly discloses all of the limitations of claims 1, 4–7, 11, and 14.
`Petitioner did not disclose the limitation that requires “an average size of
`magnetic cluster at DC erase is equal to or higher than 0.5×104 nm2 and less
`than 5.5×104 nm2” (referred to as “the average cluster size limitation”). Req.
`
`
`1 Yamazaki et al., U.S. Patent No. 6,017,605, issued Jan. 25, 2000 (Ex.
`1002, “Yamazaki”).
`
`
`
`
`2
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`Case IPR2017-00625
`Patent 6,641,891 B2
`
`Reh’g 1–2. Petitioner further contends the Petition includes two separate
`and independent reasons why Yamazaki inherently discloses media
`satisfying the average cluster size limitation: the “identical powder
`rationale” and the “performance data rationale.” Id. at 2–3. Petitioner
`acknowledges that the Board rejected the identical powder rationale, but
`argues that the Board misapprehended or overlooked the performance data
`rationale. Id. at 3–4. Petitioner also contends that we “misapprehended or
`overlooked that [Patent Owner’s Preliminary Response] not only fails to
`refute that the performance data rationale establishes that each of
`Yamazaki’s D1, D2, T1 and T2 necessarily meets the claimed average
`cluster size, but that the [Preliminary Response’s] arguments constitute an
`admission by [Patent Owner] that this is true.” Id. at 4.
`For its performance data rationale, Petitioner contends that the ’891
`patent characterizes a magnetic media as “good” based on its noise
`characteristics, specifically a signal-to-noise (S/N) ratio equal to or greater
`than 20 dB for magnetic discs, and a carrier-to-noise (C/N) ratio equal to or
`greater than 0.0 dB for magnetic tapes. Id. at 9; Ex. 1001, 29:6–18.
`Petitioner asserts that Yamazaki expressly discloses that certain
`embodiments, namely magnetic tapes T1 and T2 and magnetic disks D1 and
`D2, have all of the characteristics recited in claim 1 except for average
`cluster size, and have performance characteristics meeting the ’891 patent’s
`criteria for a “good” medium. Req. Reh’g 9 (citing Pet. 16–20). According
`to Petitioner, a person of ordinary skill in the art would have known that T1,
`T2, D1, and D2 could not have their respective C/N and S/N ratios if the
`average cluster size of each did not fall within the range recited in claim 1.
`Id. at 10.
`
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`3
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`Case IPR2017-00625
`Patent 6,641,891 B2
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`
`Petitioner directs us to pages 38–40 and 45–46 of the Petition as
`evidence that it presented the performance data rationale in Petition. Id.
`There, Petitioner presents similar arguments regarding the performance data
`rationale for each of T1, T2, D1, and D2. For example, with regard to T1,
`Petitioner argues:
`
`That T1 inherently discloses an average cluster size
`within the range recited in claim 1 is further established by its
`C/N ratio, which a POSA would have understood is indicative
`of T1’s average cluster size. EX-1006 ¶100; see e.g., EX-1003
`at Abstract and Conclusion. T1 has a C/N ratio of 0.0 dB that
`meets the threshold the ‘891 Patent established for a “good”
`tape. EX-1001 at 29:13-18; EX-1006 ¶100. A POSA would
`have understood that T1 could not have a C/N ratio of 0.0 dB if
`its average cluster size did not fall within claim 1’s range.
`EX-1006 ¶100.
`Pet. 39; see also id. at 40 (presenting similar arguments for T2), 45–47
`(presenting similar arguments for D1 and D2).
`Petitioner notes that it uses the phrase “further established by” when
`discussing the performance data rationale, and argues that this language
`indicates the performance data rationale is an alternative rationale, separate
`and apart from the identical powder rationale. Req. Reh’g 2–3, 10.
`Petitioner also contends Patent Owner’s statement that the claimed average
`cluster size range is critical to achieving good sound characteristics
`constitutes an admission that Yamazaki’s T1, T2, D1, and D2 must have an
`average cluster size within the range recited in claim 1. Id. at 7, 13–14.
`According to Petitioner, a finding that “Yamazaki’s D1, D2, T1, and T2
`embodiments somehow did not have a cluster size in the claimed range, . . .
`would be irreconcilably inconsistent with [Patent Owner’s] position.” Id. at
`
`
`
`4
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`Case IPR2017-00625
`Patent 6,641,891 B2
`
`13; see also id. at 7 (arguing that Patent Owner “should be held to the
`representations it has made to this Board”).
`
`As Petitioner points out, we did consider Petitioner’s performance
`data rationale in the Decision. Req. Reh’g 10; Dec. 14. Petitioner is correct,
`however, that we did not consider it separate and apart from Petitioner’s
`identical powder rationale. Rather, based on certain statements in the
`Petition and the Declaration of Mr. Saliba (Ex. 1006), we considered these
`rationales to be integrated components of Petitioner’s inherency argument.
`For example, Petitioner stated that “[t]he example media in Yamazaki
`discussed below, produced using the identical materials and processing
`steps used in the ‘891 Patent other than milling time, could not have their
`disclosed good noise characteristics if their average magnetic cluster sizes
`were not within the range claimed in the ‘891 Patent.” Pet. 14–15 (emphasis
`added); Ex. 1006 ¶ 52 (“The noise characteristics of Yamazaki’s media
`confirm that their average cluster sizes necessarily fall within the claimed
`range.”) (emphasis added); see also Pet. 3 (indicating that Yamazaki
`inherently discloses the average magnetic cluster size limitation in view of
`“Yamazaki’s use of the identical materials and identical processing steps . . .
`and the fact that Yamazaki meets the noise characteristics the ‘891 Patent
`states are indicative of a ‘good’ recording medium”).
`
`In view of this language, we are not persuaded by Petitioner’s
`argument that it presented the identical powder rationale and the
`performance data rationale as separate and independent rationales in the
`Petition. Therefore, we disagree that we overlooked or misapprehended
`Petitioner’s independent performance data rationale. In any case, we have
`
`
`
`5
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`Case IPR2017-00625
`Patent 6,641,891 B2
`
`considered Petitioner’s performance data rationale anew, as an independent
`rationale, and determine that Petitioner fails to demonstrate inherency.
`
`Petitioner cites to McCann2 to support its assertion that C/N and S/N
`values are “indicative” of cluster size. Pet. 39–40, 45–47. However, as we
`noted in our Decision, “although McCann explains that stacking introduces
`noise, McCann does not mention the size of these stacks, or disclose or
`suggest any correlation between the average sizes of these stacks and noise
`characteristics of magnetic recording media.” Dec. 24. Furthermore,
`McCann presents information regarding a correlation between milling time
`and noise power, but is silent regarding S/N and C/N ratios, which involve
`signal power and carrier power, in addition to noise power. PO Resp. 47;
`Dec. 22.
`We also note that the data in the ’891 patent itself undermines
`Petitioner’s contentions that T1, T2, D1, and D2 could not have their
`respective C/N and S/N rations if their average cluster sizes did not fall
`within the range recited in claim 1. See Pet. 39 (“T1 could not have a C/N
`ratio of 0.0 dB if its average cluster size did not fall within claim 1’s
`range.”), 40 (“T2 could not have a C/N ratio of 1.3 dB if its average cluster
`size did not fall within claim 1’s range[ ].”), 45 (“D1 could not have a S/N
`ratio of 24.0 dB if its average cluster size did not fall within claim 1’s
`range.”), 46–47 (“D2 could not have a S/N ratio of 25.0 dB if its average
`cluster size did not fall within claim 1’s range.”) Tables 2 and 3 of the ’891
`patent both demonstrate that a magnetic disk or tape can have good sound
`
`
`2 S.M. McCann et al., Noise characterisation of barium ferrite dispersions,
`J. MAGNETISM & MAGNETIC MATERIALS 193, 366–369 (1999) (Ex. 1003,
`“McCann”).
`
`
`
`6
`
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`Case IPR2017-00625
`Patent 6,641,891 B2
`
`characteristics without having an average cluster size within the range
`recited in claim 1. In particular, Embodiment 13 in Table 2 has a C/N ratio
`of 0.0 and meets all limitations of claim 1 (magnetic layer size, coercivity,
`particle size) except for average cluster size. Ex. 1001, col. 28, Tables 2 and
`3. Embodiment 13 has an average magnetic cluster size equal to 5.5×104
`nm2 – which falls outside of claim 1’s range of “equal to or higher than
`0.5×104 nm2 and less than 5.5×104 nm2.” Id. at 31:47–49 (emphasis added).
`The same is true for Embodiment 6, which also has an average magnetic
`cluster size equal to 5.5×104 nm2, but otherwise meets all limitations of
`claim 1, and has an S/N ratio of 20.5. Id. at col. 28, Tables 2 and 3. These
`data demonstrate that a magnetic disk or tape can have an average cluster
`size that falls outside of the claimed range and still provide “good” noise
`characteristics.
`We recognize the ’891 patent states that Embodiments 6 and 13, each
`having a magnetic cluster size of 5.5×104 nm2, have “magnetic cluster sizes
`falling within the ranges [(or scope)] of claim 1.” Id. at 29:53–55, 30:35–37.
`According to Tables 2 and 3, Comparative Examples 3 and 10 also have a
`magnetic cluster size of 5.5×104 nm2. Id. at col. 28, Tables 2 and 3.3 The
`’891 patent, however, states that Comparative Examples 3 and 10 have
`magnetic cluster sizes “exceeding the range of the present invention.” Id. at
`30:1-5, 30:50–54. Thus, the specification of the ’891 patent is internally
`inconsistent, as it considers a value of 5.5×104 nm2 to be both inside and
`outside of the range recited in claim 1.
`
`3 Tables 2 and 3 also show that Comparative Examples 3 and 10 have
`magnetic layer, coercivity and cluster size values identical to Embodiments
`6 and 13, and were made using the same magnetic powder used to make
`Embodiments 6 and 13, respectively.
`
`
`
`7
`
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`Case IPR2017-00625
`Patent 6,641,891 B2
`
`
`The language of claim 1 itself aids in resolving this inconsistency. As
`discussed above, claim 1 expressly excludes an average cluster size of
`5.5×104 nm2, as the recited range includes only values less than 5.5×104 nm2.
`Id. at 31:47–49. Had Patent Owner sought to include 5.5×104 nm2 in the
`claimed range, it could have used the phrase “equal to” in conjunction with
`less than, as it did when describing the lower limit of the claimed range. Id.
`at 31:48 (“equal to or higher than 0.5×104 nm2”). Moreover, neither party
`offered a construction of this term or presented adequate arguments or
`evidence demonstrating that 5.5×104 nm2 should be included in the range
`recited in claim 1.
`Because Tables 2 and 3 show that it is possible to have an average
`cluster size outside the range recited in claim 1 and still have good sound
`characteristics, we are not persuaded that the performance data of
`Yamazaki’s D1, D2, T1, and T2 establishes that each of these tapes and
`disks necessarily has the claimed average cluster size.
`The data in Tables 2 and 3 of the ’891 patent also undermines
`Petitioner’s contention that we misapprehended or overlooked Patent
`Owner’s alleged failure to refute the performance data rationale and alleged
`admission that Yamazaki’s D1, D2, T1, and T2 necessarily meet the average
`cluster size limitation because the claimed range is critical to providing good
`performance. As discussed above, the evidence of record itself refutes the
`performance data rationale. Furthermore, in the Petition, Petitioner argued,
`“[t]here is nothing critical, new or unexpected about the claimed average
`cluster size.” Pet. 61 (citing Ex. 1006 ¶ 141). It was not until after receiving
`our Decision denying institution of Petitioner’s grounds under 35 U.S.C.
`
`
`
`8
`
`
`
`Case IPR2017-00625
`Patent 6,641,891 B2
`
`§ 103 that Petitioner presented an argument relying on an assertion that the
`claimed ranges are critical.
`For all of the foregoing reasons, we are not persuaded that we
`misapprehended or overlooked the performance data rationale, i.e., one of
`the bases the Petition advanced as establishing that Yamazaki inherently
`anticipates claims 1, 4–7, 11, and 14 (Ground 1), and renders dependent
`claims 8–9 obvious (Ground 2). We are also not persuaded that we
`“misapprehended or overlooked that [the Preliminary Response] not only
`fails to refute that the performance data rationale establishes that each of
`Yamazaki’s D1, D2, T1 and T2 necessarily meets the claimed average
`cluster size, but that the [Preliminary Response’s] arguments constitute an
`admission by [Patent Owner] that this is true.” Req. Reh’g 4 (emphasis
`omitted).
`
`IV. ORDER
`For the reasons given, it is hereby
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`
`
`
`9
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`
`
`Case IPR2017-00625
`Patent 6,641,891 B2
`
`PETITIONER:
`Richard F. Giunta
`James H. Morris
`Randy J. Pritzker
`WOLF, GREENFIELD & SACKS, P.C.
`RGiunta-PTAB@wolfgreenfield.com
`JMorris-PTAB@wolfgreenfield.com
`RPritzker-PTAB@wolfgreenfield.com
`
`
`
`
`PATENT OWNER:
`
`Eliot D. Williams
`Robert C. Scheinfeld
`Neil P. Sirota
`Eric J. Faragi
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`robert.scheinfeld@bakerbotts.com
`neil.sirota@bakerbotts.com
`eric.faragi@bakerbotts.com
`
`
`
`
`
`10
`
`
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